In many cases the inventor’s goal is to protect his invention not only in Israel but also outside of Israel. Some inventors mistakenly think that there is an international patent registration, but in fact there is no single registration that can protect the inventor or the company with one patent filing. However, with correct planning, it is possible to use international treaties, for example an international application under the PCT, which makes it possible to postpone the dates for filing patents in the specific target countries.
There are several strategies in the process of protecting an invention. One possible strategy is to file a patent application in Israel first. The very filing of the application in Israel grants the applicant a priority date for up to one year in some 175 countries under the Paris Convention.
In other words, an applicant who files a patent application in Israel can file a patent registration application or an international application under the PCT before 12 months have passed from the filing date of the Israeli patent, and ask for the priority date to be recognized in the later applications.
Through this approach, it is possible to begin the business process already during the first year without fear that a potential competitor will seize the priority date, since whoever first files an invention that was not published, among other things, and that meets the conditions of the Patents Law, will prevail over the later applicant (First to file).
However, there are risks in this approach, since the invention is not yet protected. That is, although the applicant has filed his application, a patent has not yet been granted on it, and therefore potential competitors can copy and exploit the invention.
The strategy of registering a patent first in Israel, filing an international application at a second stage in order to postpone patent filings in the target countries to a later stage, up to approximately two and a half years including the postponement under the PCT, and only at the last stage filing patents in specific target countries, may be suitable in certain cases, but not always, since sometimes a strategy of receiving fast answers as to whether a registered patent can be obtained should be built, rather than postponing the dates for receiving answers.
International Applications under the PCT
An international application under the PCT, as mentioned, makes it possible to postpone the date for filing patents individually in each country. In addition, the filer of the international application will receive an examination report with a search carried out by an international examiner, but the international examiner has no authority to grant a patent in a specific country.
The international examination is not binding on the examiner in the specific countries. In other words, the international examiner can give a positive opinion, and the examiner in a specific target country can present a different position from that of the international examiner.
Sometimes it makes sense to respond to the international examiner, but there is no such obligation, and this action depends on the strategy for building the patent registration process and on the number of future patent applications the inventor will wish to file. The worthwhileness of responding to the international examiner sometimes depends on the number of target countries in which the inventor or the company will wish to protect the invention, as well as on the nature and content of the report.
Patent Registration in Target Countries Worldwide
Patent registration in target countries around the world depends on business and legal variables. That is, there are countries whose domestic law differs in various fields, and therefore, legally, there is difficulty in certain fields in one country compared to another. For example, it is easier to obtain protection for inventions in software and methods of doing business in the USA than in European countries.
Of course, the business goal of the applicant and the market potential must first be examined. For example, there are inventions that are important to protect from a business perspective for one inventor, compared to another inventor who does not intend to invest marketing efforts in a certain country and sees no business sense in that country.
For example, an inventor of an invention in the automotive field will usually seek to protect the invention in countries such as the USA, Germany and Japan, while another inventor, whose invention relates to the field of Judaism, will seek to protect it in places with concentrations of Jewish population: Israel, the USA and France.
Our firm has a worldwide network of representatives, attorneys and patent attorneys in many target countries. We prepare the patent specification, and through our representatives the applications are filed in the target countries chosen by the inventor or the company.
Our associates, who hold local licenses in the various target countries, file the application according to the domestic law of that country. We send them the specification in English, and in countries where translation is required, our associates translate the specification into the local language, for example into German, Chinese, Japanese, etc.
For more details and to file patents in Israel and worldwide, call: +972-3-9711013.